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Apple v. Samsung:What you need to know nowThursday, September 24, 2015| 1:00 PM EasternSponsored by the ABA IP Law Section


Elizabeth D. FerrillFinnegan, Henderson, Farabow, Garrett & Dunner LLP


The Ongoing Saga

2015

2016

May Jun Jul

Aug

Sep Oct No

v Dec 2016

Federal Circuit Panel Decision

May 18

Petition for En Banc Denied

August 13

Stay of Mandate Denied &

Mandate issuesAugust 25

Case Mgt Conference (N.D. Ca.)

September 18

Deadline to FileCert Petition

November 12

PTO Issues Non-Final Rejection

of ’677 Patent

August 5 Apple Responsein Reexam of’677

December 5


Apple’s Design Patents

D593,087 D604,305D618,677


Samsung’s Arguments


Infringement of a Design Patent

If in the eye of an ordinary observer, giving such attention as purchaser usually gives, two designs are substantially the same if the

resemblance is such as to deceive such an observer, inducing him to purchase one

supposing it be other, the first one patented is infringed by the other.

Gorham v. White, 81 U.S. 511, 528 (1872)

7


Is “Actual Deception” Required?

• Samsung:• Jury instruction made the jury consider a lack of

actual deception irrelevant…

• Jury instruction:• “You do not need, however, to find that any

purchasers actually were deceived or confused by the appearance of the accused Samsung products….”


Is “Actual Deception” Required?

• Federal Circuit:• No.• Jury instruction clarified (correctly) that actual

deception was not required• Gorham v. White says ordinary purchasers would be

likely to mistake the accused designs for the patented design (Slip op. at 23)

• Sufficient testimony on this point


What Is the Role of Prior Art?

• Samsung:• Jury instruction made the jury disregard

prior art

• Jury Instruction:• “This determination of whether two

designs are substantially the same will benefit from comparing the two designs with the prior art. You must familiarize yourself with the prior art admitted at trial in making your determination of whether there has been direct infringement.”

Prior Art Presented to Jury


What Is the Role of Prior Art?

• Federal Circuit:• Jury instruction expressly required that

each juror “must” consider the prior art admitted at trial

• Not a “mere option” as Samsung contends• Sufficient evidence on prior art and

differences for jury to reasonably rely on for its verdict

Prior Art Presented to Jury


“Additional” Design Patent Remedy

Whoever during the term of a patent for a design, without license of the owner, (1) applies the

patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of

sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable

imitation has been applied shall be liable to the owner to the extent of his total profit, but not

less than $250, recoverable in any United States district court having jurisdiction of the parties.

35 U.S.C. § 289


Samsung’s Damages Arguments

• Argument No. 1:• Damages should be limited to the profit attributable to

the infringement because of “basic causation principles”

• Argument No. 2:• Profit awards should have been limited to the

infringing “article of manufacture” not the entire infringing product


“Causation” = Apportionment

• Samsung:• Apple failed to establish that infringement of its design

patents caused any Samsung sales or profits• Samsung customers chose their products based on a

host of other factors

• Federal Circuit:• Nike v. Walmart, 138 F.3d 1437 (Fed. Cir. 1998)• Congress removed apportionment requirement in

1887• Section 489 explicitly authorizes the award of total

profit: an infringer “shall be liable to the owner to the extent of [the infringer’s] total profit”


Samsung’s “Quest for Apportionment”

• Samsung: • Profit award should be limited to infringing “article of

manufacture” to the portion of a product as sold that incorporates the subject matter of the patent

• Says analogous to the “piano case” case, Bush & Lane Piano Co. v. Becker Bros, 222 F. 902 (2d Cir. 1915)

• Federal Circuit:• Facts are different• Samsung’s phone shells are not sold separately from

innards• No legal error


Policy Arguments on Damages

• Rise of design patent trolls• Defendant’s entire profits makes no sense in the

modern world due to multiple patents• Should infringement of a single icon for a smart

TV mean disgorgement of all profits on the TV• But does “total profits” regime recognize:

• The expense in developing & commercializing good design

• The contribution that design makes to customer demand for the product

• Strong penalty to deter copycats


• Rise of design patent trolls• Defendant’s entire profits makes no sense in the

modern world due to multiple patents• Should infringement of a single icon for a smart

TV mean disgorgement of all profits on the TV• But does “total profits” regime recognize:

• The expense in developing & commercializing good design

• The contribution that design makes to customer demand for the product

• Strong penalty to deter copycats

Amici’s Policy Arguments on Damages


Samsung’s Issues for Cert Petition

• Issue No. 1: Whether a district court must ensure through proper claim construction and jury instructions, that a finding of design-patent infringement does not rest on unprotected functional elements of the design.

• Issue No. 2: Whether an award of an infringer’s entire profits exceeds the scope of Section 289 where a patented design is only a minor feature of an infringing product.


Samsung’s Issues for Cert Petition

• “To the extent of” infringer’s profits – ceiling, not a floor• Should not “jettison” ordinary principles of causation

• Profits should be limited to portion of the product to which the patented design is applied

• Otherwise outsized “windfall” damages• Conflict among the circuits:

• Young v. Grand Rapids Refrigerator Co., 268 F. 966 (6th Cir. 1920)

• Untermeyer v. Freund, 58 F. 205 (2d Cir. 1893)


Meanwhile at the USPTO

• On August 5, PTO issued a non-final office action• ’677 not entitled to claim priority to “grandparent”

patent• Anticipated/obvious over intervening prior art

• Response from Apple due in early Dec


Priority Claim Not Supported

D618,677Disclosure of “Grandparent” application


But Anticipation Under 102(e)

D618,677D618,204


Meanwhile Back in California

• Apple moved for proposed partial final judgment• Samsung asked for JMOL• Scheduling Conference in mid-Sept• Fourth trial set before Judge Koh, March or April

2016• Damages retrial only• Determine amount of damages for the infringement of

5 Apple patents by 5 Samsung products


Stay Tuned


William J. SeymourLando & Anastasi, LLP


Apple v. Samsung at the District Court

26

D593,087 D618,677 D604,305


Apple v. Samsung at the District Court: Claim Construction

Samsung Sought to Exclude Allegedly Functional Design Elements Through Claim Construction:

D593,087 D618,677

1. “a size that can be handheld,”

2. “a screen that encompasses a large portion of the front face of the smartphone,” and

3. “a speaker on the upper portion of the front face of the product”

Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 1090 at 11-12 (N.D. Cal. July 27, 2012) (Samsung’s opening design patent claim construction brief).



Samsung Sought to Exclude Allegedly Functional Design Elements Through Claim Construction:

1. “the use of icons as metaphors for applications, features, and commands;”

2. “the layout of those icons in a grid pattern (i.e., columns and rows)”

3. “a ‘dock’ of icons at the bottom of the screen;” and

4. “a status bar”


D604,305



Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 1425 at 5 (N.D. Cal. July 27, 2012) (preliminary order construing design patents).



D.I. 1425 at 13-14 (amended order construing design patents).

Judge Koh denies Samsung’s request to identify allegedly functional aspects of the design patents



D.I. 1425 at 13-14 (amended order construing design patents).

Judge Koh postponed determining any functional aspects of the design:


Apple v. Samsung at the District Court: Jury Instructions

D.I. 1232 at 168-169 (disputed jury instructions).

Samsung also requested a jury instruction explaining how “functionality” affects the infringement question:


Apple v. Samsung at the District Court: Jury Instructions

D.I. 1903 at 63 (final jury instructions).

Judge Koh declines to instruct the jury on functionality in the context of infringement:


Apple v. Samsung at the District Court:Samsung Infringes – Apple awarded over $1 billion in damages


Design Patent Functionality:The Statute

The Patent Act requires design patents to meet four requirements:1.New2.Original 3.***Ornamental***4.For an article of manufacture


Design Patent Functionality:“Ornamentally” vs. “Functionality”

• The words “functional” or “non-functional” do not appear in the patent act in connection with design patents. Functionality considerations relate to the statutory requirement of ornamentally.

• Courts once construed “ornamental” to mean that “a design must present an aesthetically pleasing appearance.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989).

• Over the years courts gravitated away from evaluating the “aesthetically pleasing” standard because it proved impossible to apply fairly and yielded inconsistent results.

• In 1999 the Federal Circuit put an end to the “aesthetically pleasing” standard, and held that “the ‘ornamental’ requirement … means that the design must not be governed solely by function....” Seiko Epson Corp. v. Nu-Kote Int’l, Inc., 190 F.3d 1360, 1368 (Fed. Cir. 1999).


Design Patent Functionality:“Ornamentally” vs. “Functionality”

Plaintiff's patent was invalid for another reason. To be patentable, a design, in addition to being new and inventive, must be ornamental. This means that it must be the product of aesthetic skill and artistic conception. … Plaintiff's pitcher has no particularly aesthetic appeal in line, form, color, or otherwise. It contained no dominant artistic motif either in detail or in its overall conception. Its lid, body, handle and base retain merely their individual characteristics when used in conjunction with each other without producing any combined artistic effect. The reaction which the pitcher inspires is simply that of the usual, useful and not unattractive piece of kitchenware. The design fails to meet the ornamental prerequisite of the statute.

Blisscraft of Hollywood v. United Plastics Co., 294 F. 2d 694, 696 (2d Cir. 1961).


Design Patent Functionality:Functionality = “Dictated Solely by Function”

Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996)

• “[A]lthough a particular key and its corresponding lock must mate to operate the lock, an unlimited number of key blade and corresponding keyway designs are available. Choice of any particular design is arbitrary.”

• “Best Lock admitted that no other shaped key blade would fit into the corresponding keyway, and it presented no evidence to the contrary. Therefore, … the claimed key blade design was dictated solely by the key blade's function. Any aesthetic appeal of the key blade design shown in the '636 patent is the inevitable result of having a shape that is dictated solely by functional concerns.”



Reprinted with permission of Chris Carani, of McAndrews, Held & Malloy, Ltd.



‘087 ‘677 ‘305

The Apple v. Samsung jury was not charged with determining if Apple’s design patents were invalid for being functional, and that issue was not raised on appeal.

Available design alternatives is relevant to ornamentally/functionality:


Design Patent Functionality and Infringement:Identifying Unprotected Functions During Claim Construction

OddzOn Prods., Inc. v. Just Toys, Inc.,122 F.3d 1396 (Fed. Cir. 1997)

• “Whether a design patent is infringed is determined by first construing the claim to the design, when appropriate, and then comparing it to the design of the accused device.”

• “Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.”

• “In construing the claim of OddzOn's patent, the district court carefully noted the ornamental features that produced the overall “rocket-like” appearance of the design. We agree with the district court's claim construction, which properly limits the scope of the patent to its overall ornamental visual impression, rather than to the broader general design concept of a rocket-like tossing ball.”

“Ultra Pass”


Design Patent Functionality and Infringement:“Factoring Out Functional Aspects” During Claim Construction

Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010)

• “In Egyptian Goddess, … [a]lthough we proposed that the preferable course ordinarily will be for a district court not to attempt to construe a design patent claim, we also emphasized that there are a number of claim scope issues on which a court's guidance would be useful to the fact finder. Among them, we specifically noted, is the distinction between the functional and ornamental aspects of a design.”

• “The district court here properly factored out the

functional aspects of Richardson's design as part of its claim construction. By definition, the patented design is for a multi-function tool that has several functional components, and we have made clear that a design patent, unlike a utility patent, limits protection to the ornamental design of the article.”




“As the district court noted, elements such as the handle, the hammerhead, the jaw, and the crowbar are dictated by their functional purpose. The jaw, for example, has to be located on the opposite end of the hammer head such that the tool can be used as a step. The crowbar, by definition, needs to be on the end of the longer handle such that it can reach into narrow spaces. The handle has to be the longest arm of the tool to allow for maximum leverage. The hammer-head has to be flat on its end to effectively deliver force to the object being struck.”


Design Patent Functionality and Infringement:Richardson vs. OddzOn

1. “the use of icons as metaphors for applications, features, and commands;” (Identifying a Function/Concept)

2. “the layout of those icons in a grid pattern (i.e., columns and rows)” (Factoring Out)

3. “a ‘dock’ of icons at the bottom of the screen;” and (Factoring Out)

4. “a status bar” (Factoring Out)


Was Samsung “factoring out” functional design elements or were they attempting to “identify” the functional aspects of the design?


Design Patent Functionality and Infringement:Richardson vs. OddzOn


Was Samsung “factoring out” functional design elements or were they attempting to “identify” the functional aspects of the design?

D593,087 D618,677

1. “a size that can be handheld,” (Identify a Function/Concept)

2. “a screen that encompasses a large portion of the front face of the smartphone,” and (Factor out)

3. “a speaker on the upper portion of the front face of the product” (Factor out)


Apple v. Samsung at the District Court:Motion for Judgment as a Matter of Law

Judge Koh Determines that “Factoring Out” Functional Elements is Discretionary

Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 2220 at 3 (N.D. Cal. Jan. 29, 2013) (order granting/denying JMOL).



Judge Koh Determines that “Factoring Out” is Claim Construction for the Court and Inappropriate for Jury Instructions

See also Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (“We hold that the construction of a patent … is exclusively within the province of the court.”)



Judge Koh Holds that the Allegedly Functional Elements Aren’t Functional Anyways

Apple, Inc. v. Samsung Electronics, Co., Ltd., No. 5:11-cv-01846, D.I. 2220 at 4 (N.D. Cal. Jan. 29, 2013) (order granting/denying JMOL).


Apple v. Samsung at the Federal Circuit

On Appeal, the Federal Circuit Appears to Re-Characterize Richardson, Potentially Backing Away from “Factoring Out:”

Slip Op. at 20.


Apple v. Samsung at the Federal Circuit

The Apple v. Samsung Decision Raises More Questions than Answers:

Slip Op. at 20.

• What constitutes an “ornamental aspect” of a component that is “dictated by their functional purpose”?

• Under Best Lock a functional design “element” should have no ornamentality, by definition.

• What happened to “factoring out” functional aspects? Should we simply “identify” functions, as in OddzOn?


Ethicon Endo-Surgery, Inc. v. Covidien, Inc.(Fed. Cir. Aug. 7, 2015)

See Ethicon Endo Surgery, Inc. v. Covidien, Inc.,(Fed. Cir. Aug. 7, 2015), Slip Op. at 20.

• The district court determined that claimed designs were “dictated by function,” and therefore invalid.

• In the alternative, the district court found that because the trigger and torque knob must be “factored out” under Richardson the Design Patents had “no scope,” and therefore Covidien’s accused design could not infringe the Design Patents.



Invalidity – Reversed •“[A] claimed design [is] not invalid as functional simply because the “primary features” of the design could perform functions.”

•“The analysis of whether Ethicon’s patented designs are invalid as dictated by function must also be performed at a level of particularity commensurate with the scope of the claims.”

•For functionality purposes, “it is relevant … whether other designs could be used, such that the choice of design is made for primarily aesthetic, non-functional purposes.”

Slip Op. at 32.



See Slip Op. at 20.

Infringement – Affirmed(But Modified)

•In Richardson “the design claim did not broadly protect a multi-function tool with a hammer, crowbar, handle, and claw, but only the specific ornamental aspects of that tool in the depicted configuration. ”

• “[I]n OddzOn, we limited the scope of a design claim to ornamental features of a football-shaped ball with a tail and fin structure, rejecting the patentee’s argument that its design claim covered the broad general concept of a ball with a ‘rocket-like’ appearance. ”



See Slip Op. at 33.

Infringement – Affirmed(But Modified)

• “We agree that the trigger, torque knob, and activation button elements of the underlying article have functional aspects. But the district court’s construction of the Design Patents to have no scope whatsoever fails to account for the particular ornamentation of the claimed design…”

• “there is no evidence in the record, that any of the ornamental designs adorning those underlying articles are essential to the use of the article.”



See Slip Op. at 40.

Infringement – Affirmed (But Modified)

• “[B]ecause each of these components has a functional aspect, the underlying elements must be excluded from the scope of the design claims at this general conceptual level. “

• “[W]hen the remaining ornamental features of those components are compared, as a whole, … the dissimilarities between the designs are plain.”


Conclusions

1. Design patent invalidity for functionality is an exacting standard that requires that the design, as a whole, is “solely dictated by function.”

2. The presence of alternative designs is usually determinative of non-functionality

3. Design patent defendants, such as Samsung, often argue to “factor out” allegedly functional features of the asserted design under the Federal Circuit’s decision in Richardson v. Stanley Works.

4. In Apple. v. Samsung and Ethicon v. Covidien, the Federal Circuit held that only the “functional aspect” of a design should be “factored out” at a “general conceptual level,” as in Oddzon Products v. Just Toys.

5. Samsung sought en banc review of the panel decision, which was denied on August 13.


Professor Peter J. KarolNew England Law


Registered Trade Dress


Apple claims elements from its iPhone 3G and 3GS products to define the asserted unregistered trade dress:

a rectangular product with four evenly rounded corners;

a flat, clear surface covering the front of the product;

a display screen under the clear surface;

substantial black borders above and below the display screen and narrower black borders on either

side of the screen; and

when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons.

(citing Appellee’s Br. 10-11).

Unregistered Trade Dress


Apple v. Samsung (Fed. May Cir. 2015)

• Panel: Prost (author), O’Malley, Chen

• The CAFC reversed the jury’s finding that Apple’s trade dresses were protectable, but affirmed the jury’s verdict on design patent infringement.

• In other words, design patents won and trade dress lost – But why?


Functionality

• The CAFC found the claimed trade dress to be functional despite the jury’s finding to the contrary.• The CAFC found the jury instructions on design patent functionality to be error-free.• Notably, the CAFC applied 9th Circuit law to trade dress functionality, and Federal Circuit law to design patent functionality.• The CAFC denied rehearing en banc on August 13, 2015, and refused to stay judgment pending a cert. petition by Samsung.


D’677 Patent

• Apple Design Patent Related Trade Dress

D618,677*iPhone 3G black screen

iPhone 3G and 3GS (Unregistered)

“a rectangular product with four evenly rounded corners”

“a flat, clear surface covering the front of the product;”

“substantial black borders above and below the display screen…”


D’087 Patent

• Design Patent

D593,087iPhone 3G rounded bezel and/or screen, microphone, action button


D’087 Patent


Aug. 26, 2015Copyright 2015 © Darius C. Gambino All Rights Reserved.

66

D593,087iPhone 3G rounded bezel and/or screen, microphone, action button

iPhone 3G and 3GS (Unregistered)

“a rectangular product with four evenly rounded corners”

“a flat, clear surface covering the front of the product”


D’305 Patent

• Design Patent Related Trade Dress


67

D604,305iPhone 3G

TM Reg. 3,470,983iPhone 3G

…The mark consists of the configuration of a rectangular handheld mobile digital electronic device with rounded silver edges, a black face, and an array of 16 square icons with rounded edges…


D’305 Patent



68

D604,305iPhone 3G

iPhone 3G and 3GS (Unregistered)“a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set offfrom the display’s other icons.”


The Federal Circuit reads 9th Circuit Law

• CAFC: “[T]he Supreme Court and the Ninth Circuit have repeatedly found product configuration trade dresses functional and therefore non-protectable. See [TrafFix, Secalt, Disc Golf].”

• They have? There are several District Court cases from the 9 th Circuit where product configuration trade dress was found non-functional (Fiji Water, Mixed Chicks, d.light Design, Cybergun, Dogloo).



• CAFC: Registration can’t save a functional trade dress. See [Talking Rain (bottle design), Tie Tech (cutting tool), Leatherman (Swiss Army knife)].

• It can’t? Again, there are multiple District Court cases from the 9 th Circuit that uphold registered trade dress and putting the burden on the alleged infringer to prove functionality (Fiji Water, Dogloo).



• CAFC: A product feature is non-functional only if “serves no purpose other than identification” (citing Disc Golf)

– Virtually impossible standard to meet

– This is not the law of the 9th Circuit. At least as interpreted by District Courts therein.

• Every product feature has some function outside of source identification (de jure vs. de facto functionality).



• The shape of a Coke bottle makes it easier to hold, but that doesn’t make its impression on the consumer as a source identifier any less significant.

• Subsequent District Courts applying the Disc Golf factors have found non-functionality for product shapes, even where those shapes arguably had functional benefits: Fiji Water (square water bottle), Cybergun (firearms), Dogloo (igloo-shaped doghouse).


Functionality: Design Patent v. Trade Dress

• CAFC on Unregistered Trade Dress: “rounded corners improve ‘pocketability’ and ‘durability,’” “rectangular shape maximizes the display that can be accommodated,” and “[a] flat clear surface on the front of the phone facilitates touch operation ….”

– Doesn’t the ’677 Patent show a flat clear surface?

– Doesn’t the ’087 Patent show rounded corners and rectangular shape?


• CAFC on Registered Trade Dress: Apple’s GUI “icon designs promote usability” by “‘communicat[ing] to the consumer … that if they hit that icon, certain functionality will occur on the phone.’”– Doesn’t the ‘305 Patent show the same icon designs and arrangement?– So are the functionality tests different?

Functionality: Design Patent v. Trade Dress


Ninth Circuit v. District Courts

• CAFC: “Apple conceded during oral argument that it had not cited a single Ninth Circuit case that found a product configuration trade dress to be non-functional.”– Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 2010 WL 3835673 (C.D.Cal.) (water bottle)– Mixed Chicks, LLV v. Sally Beauty Supply, LLC, 11-CV-00452 (C.D.Cal. 2011), Doc. 256 (Sp. Verdict Form) (hair care products)– Cybergun, S.A. v. JAG Precision, 2012 WL 4868104 (D.Nev.), aff’d, Dkt. No.12-17640 (9th Cir. Jul. 19, 2013) (firearms)– d.light Design, Inc. v. Boxin Solar Co., Ltd., 13-5988 (N.D.Cal. 2013), Doc. 60 (Order) (solar lamps)– Dogloo, Inc. v. Doskocil Mfg. Co., Inc., 893 F.Supp. 911 (C.D.Cal 1995) (igloo-shaped dog house)


Fiji Water (CDCA 2010)

• What about Fiji Water?• Fiji Water v. Fiji Mineral Water (C.D. Cal. 2010) – injunction for infringement of trade dress in bottle shape and appearance.• See U.S. Regs. 2,911,918 and 2,937,191 at left.• Evidence of Function: Square shape made bottles easier to package.

76


Mixed Chicks (CDCA 2011)

• What about Mixed Chicks?• Mixed Chicks v. Sally Beauty (C.D. Cal. 2011) – $8.1 million jury award and injunction for infringement of trade dress in bottle

shape and appearance.• Evidence of Function: Translucent bottles and pumps allow the purchaser to see what is inside.


d.Light Design (NDCA 2013)

• What about d.light Design?• d.light Design v. Boxin Solar (N.D. Cal. 2013) – Temporary Restraining Order (TRO) and preliminary injunction granted for infringement of plaintiff's

trade dress and design patents.• Evidence of Function: None raised by defendants, but shapes may have been easier to carry, more effective at gathering sunlight, etc.


Cybergun (D.Nev. 2012/9th Cir. 2013)

• What about Cybergun?• Cybergun, S.A. v. JAG Precision (D.Nev. 2012) – preliminary injunction based on claimed trade dress in firearms granted; affirmed by 9th Circuit.• Evidence of Function: None raised but certain features might make the firearm easier to hold, easier to fire, etc.• Court distinguished Secalt and Leatherman as cases where the products did not identify “upon sight the [manufacturer] in question…” but Apple court relied on these cases in holding that iPhone did not

identify Apple on sight.


Dogloo (CDCA 1995)

• What about Dogloo?• Dogloo, Inc. v. Doskocil Mfg. (C.D.Cal. 1995) - preliminary injunction based on claimed trade dress in igloo-shaped dog house granted.• See U.S. Reg. 1,631,630 at left.• Evidence of Function: Utility patent on same design, touted function in advertising, superior thermal qualities, easier to stack and ship.

80


Moving Forward

• Is Apple binding on anyone other than Apple and Samsung?

– Not really - It is the CAFC interpreting 9 th Circuit trade dress law, the 9th Circuit doesn’t have to follow it, and neither does any other Circuit.

• The CAFC got 9th Circuit trade dress law wrong.

• Is trade dress dead after Apple? No.

• Should you still include trade dress counts in your complaint? Yes.

• Should you still seek trade dress registrations? Yes.


Moving Forward

• Trade Dress Prosecution Practice Tips: file for design patent protection first, then after a few years file a trade dress application; if you can’t wait 5 years, go on the Supplemental Register; many litigants have prevailed with only registrations on the Supplemental Register (T-Mobile magenta, Kind Group lip balm).

82


Moving Forward

• Trade Dress Litigation Practice Tips: using existing case decisions to underscore your arguments; argue de jure vs. de facto difference; just because a product feature or shape has a function doesn’t meant that it is functional – if that were the case, then the Disc Golf test would be collapsed down to a single factor (Factor 1: “whether the design

yields a utilitarian advantage”)

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Any questions?Now, it’s your turn…

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